Appeal No. 2001-0849 Page 11
Application No. 08/990,120
there must also be a reasonable expectation that using an oxidizing agent, such as
perborate or percarbonate, at, for instance, a pH within the range of from 0.5 to 5.0,
at the prescribed temperature, would transform the starting sulfide into a sulfoxide.
“Both the suggestion and the reasonable expectation of success must be founded in
the prior art, not in the applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991). “Obviousness can not be established by
hindsight combination to produce the claimed invention,” In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
Finally, if reestablished, examiner should analyze and reevaluate the prima
facie case in light of data that appellants argue would overcome the prima facie
case of obviousness. Examiner should respond to the persuasiveness of
appellants’ data in overcoming the prima facie case of obviousness.
For the foregoing reasons, we vacate the rejection under § 103 and remand
to give the examiner an opportunity to consider the issues discussed herein and
take appropriate action not inconsistent with the views expressed herein. We
emphasize that we vacate examiner’s rejections. This means that the instant
rejection no longer exists and the issues set forth herein cannot be satisfied by a
Supplemental Examiner’s Answer. See Ex parte Zambrano,
58 USPQ2d 1312, 1313 (Bd. Pat. App. & Int. 2000).
VACATED AND REMANDED
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